Application of the Safe Harbor Provision in Judicial Practices

Issue 30 By Yi Jun and Wang Zhuo,[Copyright]

Article 23 of the Regulations on Protection of the Right of Communication through Information Network (the “Regulations”), implemented July 1, 2006, provides “A service provider in providing search or link services to its users, shall not be liable for damages if the service provider, upon written notice from a complaining party claiming to have rights, disables access to the alleged infringing works, performances or audio/visual works in accordance with these regulations; the service provider shall be liable notwithstanding for contributory infringement if the service provider actually knows or should have known that the works, performances, or audio/visual works are infringing.” This article relates mainly to network service providers that offer search link capabilities. It is a byproduct of continuous Internet development and the explosive growth of network information. This service has greatly facilitated users in the finding of information. According to statistics from the world’s leading search engine Google, more than 80% of all information is found with the help of a search engine, which exemplifies their daily importance. Based on this, the law gives linking service providers a disclaimer that is, if the service provider offers links to works, performances or audio and video recording products that infringe on the copyright of others, it will assume no liability as long as it removes the link after receiving notice from the copyright holder. The law holds that the amount of network resources is too massive and constantly changing, so that it would be too harsh to order service providers to check every link, and guarantee that they do not infringe on copyrights

This provision is based on the U.S. Digital Millennium Copyright Act (DMCA) of 1998, which is widely followed by many countris in copyright legislation as a “safe harbor” and a “notice/takedown” procedure. As to notice requirements; Article 14 of the Regulations provides that with respect to a network service provider that provides information memory space, or searching or linking services, in case the relevant owner believes that any of the works, performance or audio-visual products as involved in the services has injured his right to network dissemination of information, or that his electronic information on right administration has been deleted or altered, he may file a written notice with the relevant network service provider, requesting it to delete his works, performance and audio-visual products or to disable the link to the works, performance and audio-visual products concerned, wherein the following contents shall be included:
(1) Name, contact information and address of the complaining party;
(2) The names of the infringed works, performance and audio-visual products that are required to be deleted or the names of the web addresses whose link is required to be disabled; and
(3) The preliminary certification materials on infringement.
The owner shall be responsible for the authenticity of his notice.

Analysis on duty of care

In judicial practice, there are different understandings on the duty of care that the service provider shall perform after the rights holder sends out the notice.

The Beijing No.2 Intermediate People’s Court heard the case of Universal Music Co., Ltd. vs. Beijing Alibaba Information Technology Co., Ltd. involving the violation of the neighboring right of copyright and determined that “The plaintiff sent two letters on April 10 and July 4, 2006 to inform the defendant on the facts of infringement, which also included the websites with the information of sound recordings, the albums with the songs involved and the singers. The plaintiff also provided the specific URL addresses for each one of the 33 songs in the case for example, and asked the defendant to delete all links to the infringing albums. After the receipt of these letters, the defendant should know about the information of the music producers and the allegedly infringing songs and should also know that the search results from its musical search service contains links to the contents that infringed on the plaintiff’s right to record and reproduce. However, the defendant only removed the 33 specific URL addresses provided by the plaintiff, however did not delete other links that also connected infringing contents. The defendant’s nonfeasance indulged violations and constituted subjective fault. The defendant’s acts attributed to helping others infringe via a network and it shall bear the corresponding liability.”

Finally, the Beijing No.2 Intermediate People’s Court ruled that the defendant was to immediately cease linking services for the 58 songs involved, and compensate the plaintiff for economic losses in the amount of 23,200 Yuan.

By contrast, after hearing the copyright infringement dispute between the plaintiff Zhejiang Pan-Asian E-commerce Co., Ltd. and the defendant Baidu Beijing Technology Co., Ltd. and Baidu Online Network Technology (Beijing) Co., Ltd., the Beijing High People’s Court found that: “In this case, the plaintiff issued to the defendant two notices with different contents. The first notice, including 9 letters, listed out the songs, contents, name of authors, as well as the list of the specific link addresses found by the plaintiff. The second notice, an official attorney’s letter, did not address the specific links. After receiving the first notice from the plaintiff, the defendant deleted all the MP3 links to third-party websites involving the 351 songs as listed out in the notice. The two parties have no objection on this act. The plaintiff also claims the defendant intended to delay the disconnection with infringing sites and continued the infringement. However, in accordance with the facts found by the court, the link addresses as listed in the 9 letters sent by the plaintiff from December 2006 to January 2007 were quite different from those as included in the two notarizations made during April-June and September-October in 2007 for evidence preservation; while notarizations made by the defendant in September and October, 2007 proved that it had already deleted the links notified by the plaintiff before the date of notarization; the plaintiff was not able to provide the evidence for the specific songs as well as the specific contents or links that were claimed to be delayed in disconnection. Therefore, the court believed that the defendant timely cut off the links to infringing site as notified by the defendant, which conformed to the exemption conditions as provided by Article 23 of the Regulations. The plaintiff claims that the defendant was required not only to delete the links specified in the letters, but also to delete or shield all of the infringing sites containing the songs claimed in the letters. Therefore, the plaintiff believed that the defendant should identify the sites with infringing songs mentioned in the second notice by the way indicated in the first notice, and that the defendant bear the obligation to find out the infringing sites. However, the plaintiff has authorized other sites and organizations to disseminate these songs via Internet. So far, the existing technology of MP3 search engine can not search with the contents of audio files. The engine can only search based on keywords. In this case, if all of the 351 songs are shielded in accordance with the song names, it may damage the legitimate rights of the licensees; if the song names are deleted or shielded as keyword, it may lead to error in deletion or shield, which would also damage the legitimate rights of others. More importantly, the notice does not meet the requirements for elements of notice as defined in Article 14 of Regulations. Therefore, the claim of the plaintiff has no legal basis.”

The author believes that after receiving “notice” from the complaining party, the search link service provider’s obligation should not be limited to deleting the URL addresses clearly specified in the “notice,” especially when the complaining party lists; title, artist name and album name of all the involved songs. With this information, the search service provider can fully identify the specific linking targets and shield them using technical means in advance. Moreover, the infinite and ever-changing network resources make it extremely difficult for the right holder to specify the URL addresses of every infringing link. Therefore, as long as the right holder gives specific information of the songs and the list of links to the URL address as an example, the search link service provider should cut off all links to the songs that have been infringed. Of course, authorized websites shall be excluded.

Notification is not a premise for liability.

It is also noteworthy that Article 23 of Regulations should not be misunderstood; that notice sent out by the complaining party is a prerequisite for the search service provider’s liability, because this article has a “proviso” clause, that is, when anyone is fully aware or should have known that any of the works, performance or audio-visual products it has linked to constitutes any infringement, it shall be subject to the liabilities of joint infringement..

Similarly, the DMCA does not take the online service provider’s “awareness” or the “notice from copyright holder” as the only basis to determine that the online service provider (OSP) has a “subjective fault.” The DMCA provides the following conditions for OSP that provides content storage services and “information location-based services” (including links) to enjoy “safe harbor”:
(A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) In the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) Upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
... ...
(C) Upon notification of claimed infringement ... responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

Under the provisions of the DMCA, even if a complaining party does not send a “notice” claiming that the material stored or linked is infringing, as long as OSP is aware of the “facts or circumstances obviously deducing to violation acts” and not “promptly remove the material or disable links to it,,” the OSP still constitutes acts of “joint infringement.” The U.S. Congress called the standards for OSP’s “subjective fault” in the MCA’s report as the “Red Flag” standards “if OSP is “aware of facts or circumstances from which infringing activity is apparent but it does not take measures, it would lose eligibility to enjoy the limitation of liability.... In determining whether the relevant facts or circumstances constitute a ‘red flag,’ in other words, whether infringing activity would have been apparent to a reasonable person operating under the same or similar circumstances, the objective element shall be adopted.”

Editing can be proof of wrongful intent

In EMI Taiwan Co., Ltd. vs. Beijing Alibaba Information Technology Co., Ltd., the Beijing Higher People’s Court found that: “Even if the copyright holder does not send the notice as provided by Article 14 of Regulations on Protection of the Right of Communication through Information Network to the network service provider, if the network service provider is aware of or should know that the recording products are infringing but still provides search or links to them, it should assume responsibility for infringement. Secondly, having fault is the precondition for a service provider to assume responsibility for infringement. To judge whether or not the plaintiff has fault, we should tell if the person can foresee or should predict the adverse consequences of his actions based on a person’s predicting ability and scope, and distinguish the common predictable level from professional level. The above-mentioned criteria also apply to network service providers. The sound recordings searched out by Yahoo China are displayed in categories of “song name, singer, album, lyrics, audition, ring tones, music box, format, size and connection speed.” In addition, Alibaba further classifies the collected songs and music information according to music style, prevalence, singer’s gender, singer and other standards and provides the information to the users in 18 sub-columns including “search song,” “search lyrics,” search box, “all male singers,” “all female singers,” “soaring new song,” “classic film music,” “EU and US classics,” as well as other specific columns like “new song ranking,” “search song ranking,” etc. It is clear that on basis of collection, collation and classification, Alibaba has made different standards of classification for corresponding information in accordance with its will. As a search engine service provider, Alibaba runs music search and other businesses, and provides users with professional search services for profit, so that it is a professional music site. With combination of these factors and in accordance with the criteria of fault, Alibaba should be able to know the legality of sound recordings that it searches or links to. EMI Taiwan Co., Ltd. issued Alibaba several notices, informing that sound recordings of the songs provided by Yahoo China in various forms of search services are all infringing its copyright and asking Alibaba to delete the links. Alibaba should attend to the legality of the 16 songs involved and take corresponding measures. However, Alibaba only deleted the links to the URL addresses specified in the notices of EMI Taiwan Co., Ltd., but did not cut off access to other websites with the infringing songs. It is obvious that Alibaba delayed the exercise of duty of care and let alone the violations acts. Alibaba is found to have subjective fault.”

Link services and the links in different categories are provided by OSP, or the outcome of artificial classification and ranking for the search results gained by the system by certain standards. In this process, service providers have been given the opportunity to check the legality of the link targets according to the name or other characteristics of the web pages or file names using common sense. Therefore, if the search service provider compiles and reorganizes the linking resources and profits by advertising and other forms, they should be able to know the legality of resources in its search or link. In the case at bar, if the resources it links to are infringing on the IPR of others the search service provider will be found to have subjective fault and should have legal liability.

In summary, different courts still have different interpretations on how to apply Article 23 of Regulations, especially different understandings regarding the terms “notice” and “fully aware or should know.” To address the problem, it would be a starting point to balance the interests of right holders, search service providers and the public. We should explore better solutions on the basis of the specific provisions of existing law and the fundamental principles of civil law, and achieve a unity between the legal and social effects.

About the author:
Yi Jun is a Chief Judge Assistant of IP Division of Beijing Intermediate People’s Court.
Wang Zhuo is a judge of IP Division of Beijing Intermediate People’s Court.

(Translated by Li Yu)

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