Federal Court of Justice: Pirate Site Blocking Must Be a Tool of Last Resort

Sci-Hub and Libgen have developed a reputation for breaking down digital walls as part of their quest to grant universal access to scientific papers, research, and knowledge.

This mission objective receives considerable support from both academics and students. In stark contrast, major publishing companies own the rights to millions of papers being offered by Sci-Hub and Libgen for free, something that undermines their premium business model.

The publishers view the platforms as straightforward pirate sites so want to deny access to them in any way possible, including via site-blocking measures.

Publishers from Germany, the United Kingdom, and United States have been fighting a legal battle in Germany. They believe that telecoms company Deutsche Telekom should implement DNS blocking to prevent customers from accessing Sci-Hub and Libgen.

After an initial lawsuit and subsequent appeal found in favor of one party and then the other, a ruling published by the First Civil Senate of the Federal Court of Justice (BGH) now clarifies the conditions under which site-blocking measures can be sought.

District Court of Munich

The case was first heard at the District Court of Munich (LG München) where publishers including Elsevier and Springer Nature claimed exclusive rights in publications including The Lancet and Nature. They claimed with a certainty of 99.99% that at least 96% of the content offered by Sci-Hub and Libgen was being made available to the public without the necessary rights.

The publishers said that before filing the lawsuit to compel Deutsche Telekom to implement DNS blocking, they had obtained a $15m judgment and injunction against Sci-Hub in the United States and conducted investigations in Russia and elsewhere. None of these ‘wins’ led to Sci-Hub shutting down.

Targeting Sci-Hub’s hosting providers was also ineffective. The publishers said copyright complaints were ignored or Sci-Hub would move to another provider, including so-called “bullet proof” hosting companies selling non-cooperation as part of their feature set.

With no other options left, compelling Deutsche Telekom to implement DNS blocking would be reasonable and also relatively cheap (2,000 to 4,000 euros), the publishers said.

Deutsche Telekom said it was not responsible for the infringements of third parties, nor was it able to assess or influence the intent of internet users during a pre-existing communications process. Noting that DNS blocking is unsuitable for eliminating infringement, the telecoms company said that the publishers had failed to exhaust more reasonable other options, including legal action against hosting providers.

In its decision, the Munich District Court sided with the publishers and ordered a number of Sci-hub domains (plus unrelated proxy sites) to be blocked by Deutsche Telekom.

Court of Appeal and Federal Court of Justice Decisions

Deutsche Telekom appealed the Munich District Court’s decision, arguing that the publishers failed to exhaust other available options before requesting a blockade, as required by law. This includes action against a hosting provider in Sweden, a member of the European Union.

The Munich Higher District Court (OLG München) agreed, overturned the lower court’s decision, and dismissed the case. Following a legal review carried out by Germany’s Federal Court of Justice (Bundesgerichtshof, BGH), a decision published yesterday finds that the court of appeal made the correct decision when it sided with Deutsche Telekom.

Site-Blocking Should Be a Tool of Last Resort

The Federal Court of Justice notes that the Telemedia Act (TMG) allows rightsholders to request blocking orders against internet service providers in order to prevent repeated violations of their rights. While this can include DNS blockades, certain conditions must be met before the relief can be obtained.

Under the TMG, the rightsholder must have “no other possibility” of dealing with infringement. The Federal Court of Justice writes that demanding DNS blocking from an ISP (Deutsche Telekom) is only suitable when action against parties closer to the infringement has been exhausted.

In this case, the publishers should have filed a lawsuit in Germany against the known Sweden-based hosting provider, demanding that it hands over all information relating to its customers, Sci-Hub and Libgen. Without even attempting this option of targeting the infringement closer to where it occurs, the publishers should not have demanded a DNS block from a service provider.

“The access provider [Deutsche Telekom], who only provides general access to the Internet, is only secondarily liable to those parties who (like the operator of the website) committed the infringement themselves or (like the host provider) contributed to the infringement by providing services and are therefore much closer to the violation of legal interests,” the decision reads.

“The plaintiffs must attempt to assert a right to information against the Swedish host provider before a German court by way of an injunction. There is no reason to refer the matter back to the Court of Appeal. The plaintiffs have made extensive submissions on the measures they have taken.”

The BGH decision can be found here. It underlines a BGH decision handed down in 2015 which found that internet providers can be obliged to block infringing websites on the condition that rightsholders have already done everything reasonably possible to stop the infringement.