Following the case of Bajatetodo, comes a recent Spanish decision of 16 June 2015 from the Juzgado de lo Mercantil no. 11, Madrid, sitting as one of the city’s Commercial Courts, in an application for a preliminary injunction against an aggregator of hyperlinks to TV and internet subscription broadcasts of football games at www.rojadirecta.me. Virtually everyone with any interest in the Spanish and Portuguese football leagues has heard about this site, as is evidenced by the fact that this case, an intellectual propery-related issue, was the subject matter of an extended article in the well-read Spanish newspaper El Mundo.
The claimants were Mediaproduccion S.L.U. and Gol Television S.L.U., supported by the Spanish National Football Federation. The defendants were a company, Puerto 80 Projects S.L.U., and an individual, Igor Seoane, administrator and trade mark and domain name holder of the site www.rojadirecta.me. This site contained hyperlinks to TV and internet broadcasts of the Spanish and Portuguese football leagues, which could only legally be accessed by subscription payment. The owners of these hyperlinks made the broadcasts freely available, and the defendants indexed, assorted and grouped (among other things) the hyperlinks in www.rojadirecta.me and other related sites.
In her ruling, the judge held that the defendants could be liable for the unauthorized exploitation of Mediaproduccion’s producer rights and Gol Television’s broadcasting rights, by virtue of Articles 120 to 127 of the Copyright Law. The judge also mentioned that the defendants’ behaviour could fall within Articles 15 and 4 of Unfair Competition Law No. 3/1991, in particular because the defendants did not observe the legal administrative requirements to which broadcasting and producers are subject, thus enjoying an anticompetitive advantage. The judge further considered that, in any event, their conduct likely did not fulfil the good faith standards in trade.
Under those findings, the judge ordered Puerto 80 Projects and Seoane to cease immediately and temporarily facilitating hyperlinks that give access to football games which were originally broadcast under payment subscription, presently or in the future. In addition, the judge ordered the registered internet access providers to block or prevent by the appropriate technical means, should the defendants not comply with the order in seven days from the enforcing date of the preliminary injunction, the access from Spanish territory to the site www.rojadirecta.me or to any other site used or to be used by the defendants for the same infringing purposes.
Since this decision was taken in the context of a preliminary injunction proceeding, it merely anticipates a potential decision on the action on the merits, but it is precisely for this reason that the decision is important; in preliminary injunction proceedings the claimant must clearly show a prima facie case, and the provision of hyperlinking has always proved to be a challenge in this regard. The following points of the decision should be highlighted:
– The judge believed that Seoane and Puerto 80 Projects acted as a single person, so no distinction should be made when it comes to ascribe their illegal activities. For instance the judge noted that, while Puerto 80 Projects managed the site, Seoane (its sole administrator) was the registered owner of the figurative mark “rojadirecta” used by Puerto 80 Projects without any recorded or unrecorded licence. The judged further noted that Seoane owned the domain names redirecting to www.rojadirecta.me and had appeared as a party in proceedings before the World Intellectual Property Organization on behalf of Puerto 80 Projects.
– The activity ascribed to the defendants consists of aggregating and embedding hyperlinks to TV and internet broadcasts for football games, the access to which could only legally be purchased by payment . Owners of the hyperlinks, named in rojadirecta.me as “official partners”, collected the signal from legal carriers and made them freely available online, sometimes deleting the “Gol Television” figurative mark affixed in the original broadcast.
– The judge gave importance to the defendants’ activity in indexing, assorting, grouping and updating the hyperlinks of the football games being broadcast or to be broadcast, as well as the fact that some of the hyperlinks did not take to the user to a different website, and so the contents of the hyperlinks could be watched in a frame directly on the www.rojadirecta.me site. The judge described the defendants’ behaviour as a active and intentional because they were fully aware that the hyperlinks represented unauthorized communications to the public and contained unauthorized reproductions of the protected broadcasts. She therefore concluded that the defendants, by indexing, assorting, grouping and updating the hyperlinks to protected works, were also infringing the claimants’ rights.
– The defendants argued that there was no longer a reason to adopt a precautionary measure because the football season had ended or almost ended, and because it was not possible to know in advance whether the claimants would have the broadcasting rights for upcoming football seasons: the claim, if successful, would then represent a form of censorship. They also argued that the claim was disproportionate as the purportedly infringing hyperlinks represented only 2% or 3% of the content of the site. The judge dismissed the arguments. Producers’ and broadcasters’ rights were enforceable for 50 years, which applied to past games to which hyperlinks could still be provided. She then indicated that the defendants were subject to fiduciary duties in accordance with Articles 16 and 17 of the Information Society and E-commerce Law No.34/2002 (transposing Directive 2000/31). The judge established a similarity with the fiduciary duty contained in the Press and Publishing Laws No. 14/1966 (Article 37) and noted that, in fact, given the small number of hyperlinks (not beyond 76 for each game) it was feasible to establish whether they were infringing. Finally, the judge considered that the claim to immediately cease was not disproportionate since it was evidenced that, contrary to what defendants stated, at least half of the hyperlinks infringed the claimants’ rights.
– The judge requested the claimants to provide a sum of 10,000 Euros to secure potential damages to defendants, ten times the initial amount suggested by the claimants. She noted that although it was not possible to establish the revenues of the defendants, the initial amount suggested by the claimants was insufficient in light of the visits to the site.