Common law tests adopted for intermediary liability

By Felipe Busnello

In a recent copyright claim, Brazil’s Supreme Court (pictured) has ruled in favour of Orkut, a social networking website owned and operated by Google. Photo: Christoph Diewald.

Last month, the Superior Tribunal de Justiça (STJ), the highest appellate court in Brazil for non-constitutional questions of federal law, awarded a landmark decision in a case discussing the liability of the social networking site Orkut for copyright infringing user-generated content on its site.

The Court ruled that content providers cannot be held liable for copyright violations committed by third parties if they do not profit from copyright infringement on the part of its users. The Court also ruled that Orkut could not be held responsible for links that users post to external pages containing copyright infringing material.

The STJ upheld the judgement passed by the appellate court. The Court mentioned that copyright infringement is excluded from the limitations on intermediary liability contained in the Marco Civil da Internet Act.

Moreover, as in other cases, the court maintained its understanding that the Marco Civil da Internet would nevertheless not be applicable to the facts, as they have occurred prior to its enactment. Thus, the judges agreed that only the general principles included in the Brazilian Civil Code were applicable to this case.

In its reasoning, the judge cited the Betamax case and the Napster case, and thereby applied to the case a standard resembling the Betamax’s “capable of substantial non-infringing uses” defense for the first time in Brazil.

The court adopted two criteria to deny the claims on contributory infringement: “1 – [t]he structure and posture of the provider have not contributed to the copyright violation; and 2 – [n]o material damages arose from the inertia of the provider.”

By the first consideration, the Court effectively applied the doctrine of contributory infringement, and subsequently ruled that the provider has not incurred in it. The terminology, “structure” and “posture”, is very similar to the tests set by the Napster and Grokster cases, respectively.

Moreover, by the second criterion, the court applied the vicarious liability doctrine a la Napster. Although similar doctrines exist in Brazil, the STJ never applied this Common Law counterpart. The following passage of the opinion specifically spelled out the two criteria:

“Orkut did not have [file] sharing as an objective. It was not possible to download [files] from the webpages of the social network. The architecture of the social network did not substantially provide to its users the necessary means to the violation of rights. In the present case, the social network does not provide a technological instrument for file sharing. To hold the provider liable would be as holding the post office liable for crimes perpetrated in private written correspondences.”

Finally, the STJ ruled, in consonance with previous judgements, that linking to infringing material does not constitute per se contributory infringement.

The ruling is not yet publicly available.

About the author

Felipe Busnello
Felipe Busnello is an attorney-at-law based in Brazil active in the field of internet and intellectual property law. He is one of the founding partners of Porto Alegre based law firm Busnello e Duro Advogados Associados. He is a member of the Special Commission on Intellectual Property and the Special Commission of Young Attorneys of the Brazilian Bar Association, Rio Grande do Sul chapter. He also acts as moderator of the research group on Intellectual Property Law of the Superior School of Attorneyship of the same entity. Felipe is fluent in English, Portuguese and Italian. He may be contacted at busnello[at]