Articles
Copyright Enforcement: The Graduated
Response Takes Centre Stage
CAROLINE B NCUBE*
University of Cape Town
1 Introduction
A significant portion of copyright infringement in the digital environment is
carried out through file sharing.1 Litigation by copyright-holders against
individuals and the providers of online file sharing or peer-to-peer (P2P)
platforms has failed to stem the tide of large-scale infringement.2 The pur-
suit of individuals has been nothing short of a ‘public relations disaster’
because of the disproportionate remedies sought.3 For example, in the United
States, Jamie Thomas-Rasset’s case, based on her sharing of 24 songs,
resulted in a fine of US$1.92 million in 2009, which was reduced to
US$54 000 in January 2010 and then fixed at US$1.5 million by a third jury
trial in November 2010.4 Thereafter it was reduced to US $54 000 in July
2011.5 An appeal was filed against that reduction in August 2011, oral
* LLB (UZ) LLM (Cantab) PhD (Cape Town). Senior Lecturer, Department of Commercial Law,
University of Cape Town. E-mail: .
1
F Oberholzer-Gee & K Strumpf ‘File-Sharing and Copyright’ (2009) 10 Policy 1 at 6 describe file
sharing as follows:
‘File sharing relies on computers forming networks to allow the transfer of data. Each computer (or
node) may agree to share some files, and file-sharing software allows users to search for and
download files from other computers in the network. Individual nodes are called clients if they
request information, servers if they fulfill requests, and peers if they do both.’
Whilst this technology is essentially neutral in that it may be used for sharing non-infringing
materials of all kinds, this article focuses on its use to share infringing music and movies. For
commentary on the extent of infringing file sharing, see Miaoran Li ‘The Pirate Party and the Pirate
Bay: How the Pirate Bay Influences Sweden and International Copyright Relations’ (2009) 21 Pace
International LR 281 at 281; Jonas Andersson ‘For the Good of the Net: The Pirate Bay as a Strategic
Sovereign’ (2010) 10 Culture Machine 64 at 69.
2
Joe Karaganis ‘Rethinking Piracy’ in: Joe Karaganis (ed) Media Piracy in Emerging Economies
(2011) 1 at 30.
3
Idem at 26; Peter K Yu ‘The Escalating Copyright Wars’ (2004) 32 Hofstra LR 907.
4
Karaganis op cit note 2 at 25–6n21; Thierry Rayna & Laura Barbier ‘Fighting Consumer Piracy
with Graduated Response: An Evaluation of the French and British Implementations’ (2010) 6
International Journal of Foresight and Innovation Policy 294, also available at http://papers.ssrn.com/
sol3/papers.cfm?abstract_id=1713146 (visited on 24 April 2012); page references in this article are to
the SSRN version.
5
Capitol Records v Thomas-Rasset Case 0:06-cv-01497-MJD-LIB Memorandum of Law & Order
Civil File No. 06-1497 (MJD/LIB), 22 July 2011, available at http://ia700504.us.archive.org/21/items/
gov.uscourts.mnd.82850/gov.uscourts.mnd.82850.457.0.pdf (visited on 10 July 2012).
© 2012. All rights reserved.
133 Cite as: (2012) 24 SA Merc LJ 133–147.
, 134 (2012) 24 SA Merc LJ
arguments were heard on 12 June 20126 and judgment is still pending as at 10
July 2012.
Litigation against P2P platforms has also failed. When attempts are made to
shut down a platform, it simply relocates to another ‘more tolerant’
jurisdiction or another platform emerges in its place.7 As a result, some
jurisdictions have introduced graduated response schemes under which
Internet service providers (ISPs) are required to take action against
individuals who repeatedly infringe copyright through file sharing despite
repeated notices to desist from infringement. Such action encompasses the
denial of Internet access, capping bandwidth and the blockage of certain
websites.8 In some jurisdictions, such action is taken by ISPs pursuant to
orders given by government institutions without any judicial oversight.9 In
others, judicial oversight is included as a court order is required before an ISP
can apply any penalty.10
Graduated response schemes may be introduced by legislation or through
private arrangements between right-holders and ISPs (private ordering). An
example of legislation that provides for the graduated response is the United
Kingdom’s Digital Economy Act 2010 (DEA). On the international plane,
such legislative provisions are implicit in chap 2 of the Anti-Counterfeiting
Trade Agreement (ACTA).11 There is no legislative provision for a graduated
response scheme in South Africa and there is currently no indication that it is
being considered by the government departments seized with intellectual
property (IP) law and policy-making. However, because of ACTA’s
international significance and recent international developments regarding the
graduated response, a general understanding of the current global approach to
such schemes is relevant to South Africa. Accordingly, this article comments
on graduated response schemes in the context of ACTA in par 2. It highlights
global public interest concerns about ACTA in par 3.1 and the constitutional
aspects of the graduated response approach from a South African perspective
in par 3.2.
Much has been written about ISP liability for secondary copyright
infringement,12 and so that discussion is not reiterated in this article. Suffice to
6
Court Roll 11-15 June 2012, US Court of Appeals, Eighth Circuit, St Paul, Minnesota available at
http://www.ca8.uscourts.gov/webcal/jun12stp.pdf (visited on 10 July 2012).
7
An example of such behaviour is the Pirate Bay’s relocation of its server from Sweden to the
Netherlands: see Li op cit note 2 at 288–9. It is reported that the Pirate Bay has several other servers
worldwide.
8
Peter K Yu ‘The Graduated Response’ (2010) 62 Florida LR 1373 at 1374. See also Jeremy Phillips
‘Three Strikes . . . and Then?’ (2009) 4 Journal of Intellectual Property Law & Practice 521.
9
Rayner & Barbier op cit note 4 at 5.
10
Ibid.
11
See European Commission, press release IP/10/1504, 15 November 2010 ‘Joint statement on the
Anti-Counterfeiting Trade Agreement (ACTA) from all the negotiating partners of the agree-
ment’, available at http://europa.eu/rapid/pressReleasesAction.do?reference=IP/10/1504&format=
HTML&aged=0&language=EN&guiLanguage=en (visited on 7 May 2011). The full text of ACTA is
available at http://trade.ec.europa.eu/doclib/docs/2010/december/tradoc_147079.pdf (visited on 7 May
2011).
12
For example, see Annemarie Bridy ‘Why Pirates (Still) Won’t Behave: Regulating P2P in the
Decade after Napster’ (2008-2009) 40 Rutgers LJ 565; Alain Strowel (ed) Peer-to-Peer File Sharing
Copyright Enforcement: The Graduated
Response Takes Centre Stage
CAROLINE B NCUBE*
University of Cape Town
1 Introduction
A significant portion of copyright infringement in the digital environment is
carried out through file sharing.1 Litigation by copyright-holders against
individuals and the providers of online file sharing or peer-to-peer (P2P)
platforms has failed to stem the tide of large-scale infringement.2 The pur-
suit of individuals has been nothing short of a ‘public relations disaster’
because of the disproportionate remedies sought.3 For example, in the United
States, Jamie Thomas-Rasset’s case, based on her sharing of 24 songs,
resulted in a fine of US$1.92 million in 2009, which was reduced to
US$54 000 in January 2010 and then fixed at US$1.5 million by a third jury
trial in November 2010.4 Thereafter it was reduced to US $54 000 in July
2011.5 An appeal was filed against that reduction in August 2011, oral
* LLB (UZ) LLM (Cantab) PhD (Cape Town). Senior Lecturer, Department of Commercial Law,
University of Cape Town. E-mail: .
1
F Oberholzer-Gee & K Strumpf ‘File-Sharing and Copyright’ (2009) 10 Policy 1 at 6 describe file
sharing as follows:
‘File sharing relies on computers forming networks to allow the transfer of data. Each computer (or
node) may agree to share some files, and file-sharing software allows users to search for and
download files from other computers in the network. Individual nodes are called clients if they
request information, servers if they fulfill requests, and peers if they do both.’
Whilst this technology is essentially neutral in that it may be used for sharing non-infringing
materials of all kinds, this article focuses on its use to share infringing music and movies. For
commentary on the extent of infringing file sharing, see Miaoran Li ‘The Pirate Party and the Pirate
Bay: How the Pirate Bay Influences Sweden and International Copyright Relations’ (2009) 21 Pace
International LR 281 at 281; Jonas Andersson ‘For the Good of the Net: The Pirate Bay as a Strategic
Sovereign’ (2010) 10 Culture Machine 64 at 69.
2
Joe Karaganis ‘Rethinking Piracy’ in: Joe Karaganis (ed) Media Piracy in Emerging Economies
(2011) 1 at 30.
3
Idem at 26; Peter K Yu ‘The Escalating Copyright Wars’ (2004) 32 Hofstra LR 907.
4
Karaganis op cit note 2 at 25–6n21; Thierry Rayna & Laura Barbier ‘Fighting Consumer Piracy
with Graduated Response: An Evaluation of the French and British Implementations’ (2010) 6
International Journal of Foresight and Innovation Policy 294, also available at http://papers.ssrn.com/
sol3/papers.cfm?abstract_id=1713146 (visited on 24 April 2012); page references in this article are to
the SSRN version.
5
Capitol Records v Thomas-Rasset Case 0:06-cv-01497-MJD-LIB Memorandum of Law & Order
Civil File No. 06-1497 (MJD/LIB), 22 July 2011, available at http://ia700504.us.archive.org/21/items/
gov.uscourts.mnd.82850/gov.uscourts.mnd.82850.457.0.pdf (visited on 10 July 2012).
© 2012. All rights reserved.
133 Cite as: (2012) 24 SA Merc LJ 133–147.
, 134 (2012) 24 SA Merc LJ
arguments were heard on 12 June 20126 and judgment is still pending as at 10
July 2012.
Litigation against P2P platforms has also failed. When attempts are made to
shut down a platform, it simply relocates to another ‘more tolerant’
jurisdiction or another platform emerges in its place.7 As a result, some
jurisdictions have introduced graduated response schemes under which
Internet service providers (ISPs) are required to take action against
individuals who repeatedly infringe copyright through file sharing despite
repeated notices to desist from infringement. Such action encompasses the
denial of Internet access, capping bandwidth and the blockage of certain
websites.8 In some jurisdictions, such action is taken by ISPs pursuant to
orders given by government institutions without any judicial oversight.9 In
others, judicial oversight is included as a court order is required before an ISP
can apply any penalty.10
Graduated response schemes may be introduced by legislation or through
private arrangements between right-holders and ISPs (private ordering). An
example of legislation that provides for the graduated response is the United
Kingdom’s Digital Economy Act 2010 (DEA). On the international plane,
such legislative provisions are implicit in chap 2 of the Anti-Counterfeiting
Trade Agreement (ACTA).11 There is no legislative provision for a graduated
response scheme in South Africa and there is currently no indication that it is
being considered by the government departments seized with intellectual
property (IP) law and policy-making. However, because of ACTA’s
international significance and recent international developments regarding the
graduated response, a general understanding of the current global approach to
such schemes is relevant to South Africa. Accordingly, this article comments
on graduated response schemes in the context of ACTA in par 2. It highlights
global public interest concerns about ACTA in par 3.1 and the constitutional
aspects of the graduated response approach from a South African perspective
in par 3.2.
Much has been written about ISP liability for secondary copyright
infringement,12 and so that discussion is not reiterated in this article. Suffice to
6
Court Roll 11-15 June 2012, US Court of Appeals, Eighth Circuit, St Paul, Minnesota available at
http://www.ca8.uscourts.gov/webcal/jun12stp.pdf (visited on 10 July 2012).
7
An example of such behaviour is the Pirate Bay’s relocation of its server from Sweden to the
Netherlands: see Li op cit note 2 at 288–9. It is reported that the Pirate Bay has several other servers
worldwide.
8
Peter K Yu ‘The Graduated Response’ (2010) 62 Florida LR 1373 at 1374. See also Jeremy Phillips
‘Three Strikes . . . and Then?’ (2009) 4 Journal of Intellectual Property Law & Practice 521.
9
Rayner & Barbier op cit note 4 at 5.
10
Ibid.
11
See European Commission, press release IP/10/1504, 15 November 2010 ‘Joint statement on the
Anti-Counterfeiting Trade Agreement (ACTA) from all the negotiating partners of the agree-
ment’, available at http://europa.eu/rapid/pressReleasesAction.do?reference=IP/10/1504&format=
HTML&aged=0&language=EN&guiLanguage=en (visited on 7 May 2011). The full text of ACTA is
available at http://trade.ec.europa.eu/doclib/docs/2010/december/tradoc_147079.pdf (visited on 7 May
2011).
12
For example, see Annemarie Bridy ‘Why Pirates (Still) Won’t Behave: Regulating P2P in the
Decade after Napster’ (2008-2009) 40 Rutgers LJ 565; Alain Strowel (ed) Peer-to-Peer File Sharing
