Copyright: communication to the public

Background

Infringement of copyright occurs when there is communication to the public of a copyright work (Article 3, the Directive) (Article 3).

An act of communication to the public under Article 3 occurs when a link communicates protected subject matter to a “new public”, meaning a public not taken into account when the copyright holder authorised the initial publication of their work or protected subject matter. In Svensson and others v Retriever Sverige AB, the ECJ held that no communication was made to a new public by creating a hyperlink to a copyright work already made freely available on a website with the consent of the right-holder (see News brief "Linking and framing copyright material: guidance at last", www.practicallaw.com/4-558-3665).

Framing is a technique which allows a website’s (Website A’s) users to view material from another website (Website B) within a frame on Website A such that the user does not necessarily know it originates from Website B.

Facts

S operated a digital library of culture and knowledge which networked German cultural and scientific institutions. S’s website contained links to digitised content stored on the internet portals of participating institutions. The website stored only thumbnails or smaller versions of the original images of the subject matter.
V argued that its licence agreement with S for S's use of V's catalogue of works in the form of thumbnails should be subject to a provision under which S undertook, when using the protected works and subject matter covered by the agreement, to implement effective technological measures against the framing by third parties of the thumbnails of the protected works or subject matter displayed on S’s website.

S argued that the proposed provision was unreasonable in the light of copyright legislation and applied to the court for a declaration that V was required to grant S the licence without any condition requiring S to implement technological measures.

The German court referred a question to the ECJ on the interpretation of the exclusive right of communication to the public under Article 3(1).

Decision

The ECJ interpreted the question to be decided as whether Article 3(1) meant that embedding, by means of the framing technique, in a third-party website page, works that were protected by copyright and that were made freely accessible to the public with the authorisation of the copyright holder on another website, constituted a communication to the public within Article 3(1), where the embedding circumvented protective measures against framing adopted or imposed by the copyright holder.

Provided that the technical means, such as accessibility through the internet, used to make the works available by the framing technique were the same as those previously used to communicate a protected work to the public on the original website, the framing did not amount to a communication made to a new public and therefore did not fall within Article 3(1). However, this principle assumed that access to the works concerned on the original website was not subject to any restrictive measure (Svensson). Where a link makes it possible for users of a website on which the link appears to circumvent measures put in place on another website on which a copyright work appears, to restrict public access to the work to the latter site’s subscribers only, and the link therefore constitutes an intervention without which the users will not be able to access the work, the users are deemed to be a new public that was not taken into account by the rights holders when they authorised the initial communication. In those circumstances, the rights holder's authorisation is required for the communication to the new public. This might occur where the work is no longer available to the public on the site on which it was initially communicated or where it is currently available on that site only to a restricted public, but it is accessible on another website without the rights holder's authorisation.

Here, V sought to make the grant of a licence subject to the implementation of measures to restrict framing to limit access to their works from websites other than those of their licensees. In those circumstances, V could not be regarded as having consented to third parties being able to communicate their works to the public freely.

Where a rights holder adopts or obliges licensees to employ technological measures limiting access to the rights holder's works from websites other than that on which they have authorised communication to the public of the works, the rights holder is deemed to have intended to attach qualifications to their authorisation to communicate those works to the public through the internet. The initial act of making available on the original website and the secondary act of making available, by means of the framing technique, constitute different communications to the public. Each act must be authorised by the rights holders.

However, to ensure legal certainty and the smooth functioning of the internet, the rights holder cannot be allowed to limit their consent by means other than effective technological measures within the meaning of Articles 6(1) and 6(3) of the Directive. In the absence of measures, it might prove difficult, particularly for individual users, to determine whether the rights holder intends to oppose the framing of their works. It might prove even more difficult where the work is subject to sub-licences.

If embedding content from a third-party website page by means of framing a work previously communicated on another website with the rights holder's authorisation does not constitute making the work available to a new public, even though the rights holder has adopted or imposed measures to provide protection from framing, then that would amount to creating a rule on exhaustion of the right of communication. It would also deprive the rights holder of the opportunity to claim an appropriate reward for the use of their work. In addition, it would not strike a fair balance in the digital environment between, on one hand, the interest of rights holders and, on the other hand, the protection of the interests and fundamental rights of users of protected subject matter, in particular their freedom of expression and information, as well as the public interest.

Comment

This decision is an extension of the ECJ's earlier ruling in Svensson. Until this decision, the question of whether contractual, not merely technical, restrictions on access could be imposed had not been addressed. A practical consequence of the decision is that it appears that a rights holder can restrict linking as a matter of contract, but only to the extent of imposing technological measures to prevent access by third parties.

Although the decision is not binding in the UK as it was handed down after the end of the Brexit transition period on 31 December 2020, it was still considered by the Court of Appeal in Warner v TuneIn (see "Copyright: infringement of musical copyright", Bulletin, IP and IT, this issue).

Case: VG Bild-Kunst v Stiftung Preussischer Kulturbesitz C 392/19.

First published in the May issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200