Posted on by Remy Chavannes

Communication to the public in Europe

Communication to the public in Europe: recent developments in EU copyright law in relation to digital media services

This paper, prepared for the 2018 AIPLA Annual Meeting in Washington, DC (slides available here), provides an introduction to the remarkable recent body of case law of the Court of Justice of the European Union (CJEU) on the author’s exclusive right of communication to the public in relation to digital media services. It places this case law in the context of purpose and setup of the CJEU’s preliminary reference procedure, and of pending EU legislative developments that will further muddy the waters for providers of digital media services.

In the last two years, the CJEU has ruled that hyperlinking to a work on a third-party website that you have reason to believe was uploaded unlawfully is a communication to the public of that work;[1] that selling fully-loaded Kodi hardware boxes is a communication to the public of the content that users view on it;[2] that torrent-indexing sites infringe copyright;[3] that offering a cloud-based personal video recorder service infringes the communication to the public right; and that publishing a school presentation containing a photo taken from a travel website requires the photographer’s permission.[4]

With its recent decisions, the CJEU has all but abandoned any notion that the author’s exclusive right to authorize “communication to the public” refers to a technically, objectively delineated set of actions that involve the actual transmission of protected works – notwithstanding the recital to the 2001 EU Copyright Directive which ostensibly limits the scope of the right to the transmission or retransmission of a work to the public not present at the place where the communication originates.[5] The Court has redefined the concept in considerably more subjective and functional terms. Indeed, one might be forgiven for concluding that the CJEU essentially considers any deliberate for-profit facilitation of access to copyright-protected information to require the rightholder’s permission.

Understanding the CJEU’s recent decisions about the communication to the public right, and identifying a broader coherence in the case law as a whole, is a challenge for practitioners both in the EU and beyond. Lawyers not familiar with EU procedural law face an additional interpretative hurdle, in that the CJEU’s role and procedures are unique and subtle. The CJEU is not a supreme court, and its role is entirely different to that of, for example, the US Supreme Court in shaping US copyright law.

Adding a further layer of complexity to EU digital copyright law, a proposed Directive on Copyright in the Digital Singe Market, currently being finalised,[6] seeks substantially to erode the safe harbour regime for online intermediaries, providing that “online content sharing service providers” bear primary liability for their users’ infringing uploads unless they install proactive copyright filters. The proposed directive will also give news publishers additional rights to restrict digital uses of their press publications, posing new challenges to the way that news is referenced and shared online.

The role and functioning of the CJEU

The CJEU has jurisdiction to give binding rulings on the interpretation of the EU treaties , and on the interpretation and validity of EU legislative acts.[7] The EU treaties include the EU Charter of Fundamental Rights, which obtained full force of EU law from 1 December 2009.[8] This Charter protects, as fundamental rights, rights including intellectual property, freedom of expression, privacy and data protection, the freedom to conduct a business, and the right to an effective remedy. EU legislative acts include directives, which Member States must transpose into national law; and regulations, which have direct effect in the Member States. Examples are the Copyright Directive, which harmonises much of EU copyright law, and the 2016 General Data Protection Regulation (GDPR), respectively.

For our present purposes, the CJEU is not an appellate or supreme court, i.e. it does not review the decision of a lower court.[9] Rather, it answers questions about the interpretation and validity of EU law that are referred to it by a domestic court in one of the Member States. The CJEU’s job is not to decide who wins the case, but to answer the questions put to it by the national court about how to interpret a specific provision of EU law. After the CJEU has given its answer, the case goes back to the national court, which must adjudicate the actual dispute by applying the freshly-clarified provisions of EU law to the facts.[10]

It is thus the national courts that decide whether to refer questions to the CJEU,[11] which questions to refer and which facts to include in its referring decision.[12] Parties themselves cannot appeal to the CJEU. Moreover, outside of limited grounds for inadmissibility, the CJEU cannot decide which cases to hear.[13] With no equivalent to the US Supreme Court’s certiorari process to influence the inflow of new cases, the CJEU has a challenging case-load: it receives upwards of 500 references for a preliminary ruling each year.[14]

Perhaps surprisingly given the significant and unpredictable case-load, the CJEU has only 28 judges, one appointed by each Member State. In many cases, the Court will ask one of its 11 advocates-general to prepare an opinion advising them how to answer the questions referred. Cases are decided by chambers composed of three or five judges, with no formalised system of specialisation between the chambers. It is therefore possible for subsequent cases about similar questions to be decided by different chambers, who might not necessarily agree with each (but will seek to avoid any conflict or sign of disagreement).[15] The court occasionally decides very important or contentious cases in a 15-judge Grand Chamber formation that includes the presidents of the various chambers.[16]

The CJEU’s interpretation of a provision of EU law in a preliminary reference case is binding, not just on the parties and national courts in the specific case, but also on other national courts. The fact that the effect of a decision transcends the particular case is reflected in the set-up of proceedings, which the CJEU itself considers to be non-adversarial,[17] and in which the litigants and facts of the specific case have only a limited role to play. The parties to the case are allowed to participate, but so are EU Member States, the European Commission and other EU institutions (however, amicus briefs from organisations not party to the domestic proceedings are not allowed[18]).

The Court’s view of the facts is limited: it receives only the decision of the referring court, so does not have the rest of the case file, nor any underlying exhibits or witness or expert statements. The intervening parties, notably the European Commission and any Member States who take an interest in the case, will have equally limited knowledge of the facts, and indeed will be less concerned with them than with the broader issues of interpretation at stake. The parties themselves may submit no more than 20 pages of written observations,[19] and are generally allowed no more than 15-20 minutes of oral argument at the hearing.[20]

The judges’ access to the facts is further clouded by the CJEU’s language regime, which generally means that different participants at the oral hearing are obliged to speak in different languages.[21] The CJEU has quite outstanding interpreters, but there is an inevitable loss of flow, nuance and accuracy when technical explanations of the functioning of internet technology are interpreted live, first from the language of the speaker into French, and then often onwards from French into the language spoken by a particular judge.

In summary, the preliminary reference procedure is intended for the CJEU to clarify an abstract point of EU law (“should Directive X be interpreted as meaning Y?”), with the application to the facts being the prerogative of the national court. The procedure is consequently designed for high-level debates on legal principles, with limited room given to the parties to the domestic proceedings or to the facts of the case. As we will see, however, the CJEU in practice attaches considerable weight to the underlying facts, and seeks to provide an answer that is ‘right’ in the circumstances of the case. What is ‘right’ is thus argued over by EU Member States and institutions, and ultimately decided by CJEU, all of whom have limited access to information about those facts.

The CJEU’s basic approach to copyright law

In its interpretation of the EU Copyright Directive, the CJEU has consistently noted that the directive prescribes a high level of protection to authors and rightholders,[22] but also a fair balance between the rights of authors on the one hand, and those of users on the other.[23] The requirement of fair balance has been strongly influenced by the EU Charter, which has constitutional status and thus guides the interpretation of secondary EU legislation such as a directive.

In the Promusicae decision from 2008, the CJEU ruled that the Member States must, when transposing EU directives into national law, take care to rely on an interpretation of the directives which allows a fair balance to be struck between the various fundamental rights protected by the EU legal order; and that, when implementing the measures transposing directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of EU law.[24]

In subsequent decisions, the CJEU established that, while the protection of the right to intellectual property is indeed enshrined in Article 17(2) of the Charter, there is nothing whatsoever in the wording of that provision or in the Court’s case-law to suggest that that right is inviolable and must for that reason be absolutely protected. Rather, the protection of the fundamental right to property, which includes the rights linked to intellectual property, must be balanced against the protection of other fundamental rights. More specifically, in the context of measures adopted to protect copyright holders, national authorities and courts must strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures.[25]

Consequently, EU directives in the sphere of intellectual property, including the Copyright Directive, are to be interpreted and applied in accordance with other fundamental rights provided for in the Charter, such as freedom of expression, privacy, and the right to an effective remedy. Copyright is a fundamental right, but merely one of many, with no claim to priority. Where the interests of rightholders collide with those of others, national legislators and national courts must achieve a “fair balance” between the various competing fundamental rights.

The CJEU’s case law shows that this balance between rightholders’ and users’ fundamental rights can be achieved at different levels:

a) when defining the scope of the exclusive right; [26]

b) when interpreting exceptions & limitations;[27] and

c) when assessing the suitability of specific enforcement measures.[28]

A pending case about whether the smell of cheese can be protected by copyright may yet throw up a fourth level at which this balance can be struck, i.e. when defining copyrightable subject-matter.[29]

Since the entry into force of the Copyright Directive in 2001, the CJEU has answered several dozen preliminary references from national courts about its interpretation. An significant number of these relate to the right of communication to the public. This is perhaps unsurprising, given that the right largely determines the impact and value of copyright protection in the digital age, and is sparsely defined in the Directive.[30] Moreover, the CJEU has found it very hard to provide an interpretation that can be applied consistently and acceptably across different fact patterns. National courts have repeatedly found themselves having to refer new questions seeking guidance on the application of the communication to the public right to slightly different facts, or resolution of apparent conflicts in previous decisions.[31]

A summary of the CJEU’s case law on the communication to the public is beyond the scope of this contribution. Rather, what follows is an overview and brief discussion of five judgments from the last two years that are particularly pertinent to the provision of digital media services. In each of these cases, the CJEU found the relevant activity to constitute a communication to the public.

Recent CJEU decisions on communication to the public

Placement of hyperlink to unlawful third-party content – GS Media

The GS Media case[32] relates to a Dutch satirical news weblog, GeenStijl.nl, which published a news article about the anonymous online leak of a Playboy photoshoot of local media personality Britt Dekker, several weeks prior to official publication. The GeenStijl article speculated whether the leak was the product of poor IT security, a disgruntled employee, or a deliberate marketing ploy. It then linked enthusiastically to a page on the Australian cyberlocker site FileFactory, where users could, with a few more mouse clicks, download a zip file containing full-quality proofs of the Britt Dekker story from the upcoming edition of Playboy.

In proceedings before the national courts, Playboy’s Dutch publisher Sanoma asserted various claims against GS Media, including direct copyright infringement. Although the CJEU had held in Svensson that the provision of a hyperlink to information publicly accessible elsewhere on the internet was not a communication to the public,[33] that case related to information that had been published with the consent of the rightholder. The Dutch Supreme Court had to consider whether the CJEU’s reasoning in that case, which revolved around the fact that the entire internet public had already been reached by the original upload, also applied where the original upload had apparently not been authorized by the rightholder. It decided that the answer to this question was not obvious and had not been provided by the CJEU in previous decisions. If therefore asked the CJEU to explain under what circumstances the act of posting a hyperlink to protected works, freely available on another website without the consent of the rightholder, would constitute a communication to the public.

During the oral hearing at the CJEU, it was apparent that not just Sanoma, but most other participants with the exception of GS Media, found GeenStijl’s conduct to have been objectionable: although it had not uploaded the photos itself, it had nonetheless encouraged and helped its readers to find and download images that had been uploaded without authorisation, and that the general public would otherwise have had a hard time finding. The debate mostly centred around whether this conduct should be dealt with under domestic tort law, akin to secondary copyright infringement (not harmonised at the EU level, hence the prerogative of the Dutch courts), or whether Sanoma should also be able to assert direct infringement of its copyright (harmonised at the EU level, hence the prerogative of the CJEU). Whatever the merits of these objections, informed as they were by the limited facts available to the CJEU and the other participants, it was clear that the question of copyright liability for hyperlinks to infringing third-party content were not only being considered in the abstract.

The advocate-general advised the CJEU to conclude that there had been no communication to the public,[34] arguing that a hyperlink to a protected work should not be considered a communication of that work at all (which would have required the CJEU to reverse part of its reasoning in Svensson); that GS Media’s intervention was not indispensable because the infringing files were available to all internet users regardless; and that any other conclusion would significantly impair the working of the internet and not achieve the required fair balance between rightholders and users. He emphasised that Sanoma would have sufficient other remedies to enforce its rights.

The CJEU did not follow the advice of its advocate-general. Summarising earlier case law, it explained that the concept of ‘communication to the public’ includes two cumulative criteria, namely, an ‘act of communication’ of a work, and the communication of that work to a ‘public’; and that the concept moreover requires an individual assessment, taking into account several complementary criteria, which are not autonomous and are interdependent, which may, in different situations, be present to widely varying degrees, and which must therefore be applied both individually and in their interaction with one another. These criteria include the deliberate, indispensable role of the user in giving access to a protected work to its customers, in particular where its customers would otherwise not, in principle, be able to enjoy the work; the use of different technical means from the original transmission or else the reaching of a new public; and the profit-making intention of the user.

The CJEU went on to distinguish the facts of GS Media from those of Svensson, holding that the latter case related only to the posting of hyperlinks to works which have been made freely available on another website with the consent of the rightholder, and emphasising that every act of communication of a work to the public is to be authorised by the copyright holder.

The Court then turned to the objections from GS Media, the European Commission, a number of intervening Member States (and, although the Court did not acknowledge it, its advocate-general), that considering any hyperlink to a third-party website to potentially infringe copyright would have highly restrictive consequences for freedom of expression and of information and not be consistent with the requirement of “fair balance”.

45. In that regard, it should be noted that the internet is of particular importance to freedom of expression and of information, safeguarded by Article 11 of the Charter, and that hyperlinks contribute to its sound operation as well as to the exchange of opinions and information in that network characterised by the availability of immense amounts of information.

46. Furthermore, it may be difficult, in particular for individuals who wish to post such links, to ascertain whether website to which those links are expected to lead, provides access to works which are protected and, if necessary, whether the copyright holders of those works have consented to their posting on the internet. Such ascertaining is all the more difficult where those rights have been the subject of sub-licenses. Moreover, the content of a website to which a hyperlink enables access may be changed after the creation of that link, including the protected works, without the person who created that link necessarily being aware of it.

The CJEU chose to account for freedom of information in a more limited way than its advocate-general advised, holding that there is no communication to the public when the user placing the hyperlink does not know, and cannot reasonably know, that that work to which he is placing a hyperlink had been published on the internet without the consent of the copyright holder. In contrast, where it is established that the user did know or ought to have known that the hyperlink he posted provides access to a work illegally placed on the internet, the provision of that link does constitutes a communication to the public. Finally, the CJEU held that when the posting of hyperlinks is carried out for profit, the user can be expected to carry out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder.

In GS Media, the CJEU thus seeks to achieve a fair balance between the interests of rightholders and users by tweaking the scope of the exclusive right, essentially holding that unknowing private hyperlinkers do not communicate to the public while making knowing or for-profit linkers responsible for ensuring that their hyperlinks to not lead to infringing content. At the doctrinal level, this introduces a subjective knowledge element that had previously been lacking from copyright’s exclusive rights. More practically, it raises new questions of definition (when does a hyperlinker act for profit?) and application (how could a large-scale commercial hyperlinker ever be expected to ascertain whether each and every work referenced through a hyperlink has been published lawfully?).

Sale of multimedia boxes – Stichting Brein / Wullems

Soon after GS Media, the CJEU considered another reference about communication to the public and the facilitation of access to unlawful third-party content. The concerned the sale by a Mr. Wullems of video player hardware devices, preloaded with XBMC and Kodi software and various addons providing easy access to services offering unauthorized video content. Wullems marketed the box as enabling users to “watch everything: Unlimited access to the best films, series and sports without a subscription. That’s what you want too, right?”

Given that the video player at issue was a dual-use device, a US lawyer might have expected analysis on secondary liability along the lines of Sony[35] or Grokster.[36] As pointed out above, however, there is no harmonised concept of secondary liability in EU copyright law. An affected rightholder could probably have obtained injunction quite easily based on national secondary-liability law. However, the case was brought by Stichting Brein, an anti-piracy organisation representing Dutch rightholders in the entertainment sector with a reputation for strategic litigation. It chose also to assert primary infringement, with the specific aim of getting a rapid referral to the CJEU, based on ‘good’ facts, on two experimental questions:

1.  Can the mere sale of viewer hardware, albeit hardware customized and marketed for viewing unauthorized streaming services, constitute a communication to the public?

2. Can the mere viewing of an unauthorized stream constitute an unauthorized reproduction, notwithstanding the exception for transient copying?

The hearing in Brein / Wullems was held three weeks after the same chamber of the CJEU handed down its decision in GS Media. Given that decision, and the facts of this case, it was predictable that the Court would seek also to decide this case as a primary copyright infringement, rather than leaving it to the national court to decide under domestic secondary-liability law. To do so, however, required some argumentative gymnastics, given that as recital 27 of the Copyright Directive states, in accordance with the Agreed Statement on Article 8 of the WIPO Copyright Treaty, that the mere provision of physical facilities for enabling or making a communication does not in itself amount to ‘communication’.

Combining the general principles established in GS Media with earlier case law to the effect that hotels providing in-room TVs to customers also performed a communication to the public of TV programmes,[37] the CJEU characterised Mr. Wullem’s conduct as acting, with full knowledge of the consequences of his conduct, to pre-install onto the multimedia player, which he marketed, add-ons that specifically enable purchasers to have access to protected works published — without the consent of the copyright holders of those works — on streaming websites, and enabling those purchasers to watch those works on their television screens. It found that this intervention, enabling a direct link to be established between websites broadcasting counterfeit works and purchasers of the multimedia player, without which the purchasers would find it difficult to benefit from those protected works, was quite different from the mere provision of physical facilities.

What is perhaps most remarkable about the CJEU’s decision in Brein / Wullems on the issue of communication to the public[38] is that the defendant clearly did not at any time transmit any protected works. Moreover, his “deliberate intervention” would have ended at the moment he sold the hardware box to a consumer, at which point the box would have contained no infringing works, and obviously have been switched off and thus not connected to any online source. At that point in time, the consumer would not yet have watched a single pirated video using the device. And yet, in the CJEU’s analysis, Wullems, by merely selling the preconfigured hardware device, was performing a communication to the public. The CJEU does not discuss which works Wullems is held to have communicated, and the issue was not pertinent because Stichting Brein was seeking declaratory judgment on behalf of all its rightholder backers, rather than specific damages. If forced to consider specifics, however, the CJEU would presumably have held that Wullems was communicating either the works that the relevant customer subsequently went on to watch, or all works they theoretically had access to through the device. Yet in both cases, any accessing of infringing content would have postdated the moment of sale.

Provision of a torrent index site – Brein / Ziggo & XS4ALL (Pirate Bay)

A month after the hearing in Brein / Wullems, the same Second Chamber of the CJEU heard another reference from a Dutch court in a case brought by the same anti-piracy organisation Stichting Brein. This case concerned Stichting Brein’s demand, based on Article 8(3) of the Copyright Directive, that internet access providers Ziggo and XS4ALL should employ IP and domain-name filters to prevent their users from accessing the bittorrent tracking site The Pirate Bay. As part of its consideration of the applicability of Article 8(3), the national court needed to know whether the providers of the Pirate Bay were themselves infringing the rightholders’ exclusive right of communication to the public.[39] Once again, the facts of the case and the previous decisions of (this chamber of) the CJEU were a solid predictor of the outcome.

The CJEU found that the making available and management, on the internet, of a sharing platform which, by means of indexation of metadata relating to protected works and the provision of a search engine, allows users of that platform to locate those works and to share them in the context of a peer-to-peer network, constitutes a communication to the public. It based its decision on the principles established in GS Media and Brein / Wullems, inferring from them that, as a rule, any act by which a user, with full knowledge of the relevant facts, provides its clients with access to protected works, is liable to constitute an ‘act of communication’ for the purposes of Article 3(1) of the Copyright Directive. It noted that the providers of the Pirate Bay platform were deliberately intervening, with full knowledge of the consequences of their conduct, to provide access to protected works, which users would otherwise find it more complicated to find; and that the providers of the platform made available and managed the hyperlinks by indexing and updating them.

Provision of a cloud personal video recorder service – VCAST

VCAST provides a ‘cloud PVR’ i.e. web-based personal video recorder service, which allows users to record the terrestrial programmes of Italian television broadcasters for time-shifting purposes. As such, it provides functionality that is essentially similar to a traditional hardware VCR, which is protected by the private-copying exception of Article 5(2)(b) of the Copyright Directive, and the aforementioned recital 27 on the mere provision of physical facilities for enabling or making a communication. However, a cloud PVR is a subscription service rather than a physical product, and hence engages a different set of potential copyright challenges.

VCAST filed proceedings against major Italian TV company RTI (part of the Mediaset group controlled by Silvio Berlusconi), seeking declaratory judgement of non-infringement. In the course of proceedings, RTI sought and obtained an interim injunction against VCAST. The Italian court referred questions to the CJEU on the applicability of the private-copying exception.

After walking through its prior case law on the private-copying exception, the CJEU notes that, in any case, that exception only limits the rightholder’s exclusive right of reproduction, and does not require the rightholder to tolerate other unauthorised uses of his works. It thus shifts the discussion to a question not posed by the referring court, namely whether the provision of a cloud PVR service infringes the exclusive right of communication to the public. The Court reiterates its by-now familiar principles on this issue, i.e. that the concept of ‘communication to the public’ includes two cumulative criteria, an ‘act of communication’ of a work and the communication of that work to a ‘public’; that the concept of an ‘act of communication’ refers to any transmission of the protected works, irrespective of the technical means or process used; that every transmission or retransmission of a work which uses a specific technical means must, as a rule, be individually authorised by the author of the work in question; and that in order to fall within the concept of ‘communication to the public’, the protected works must actually be communicated to a ‘public’, which refers to an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons.

Having set out these principles, the CJEU very quickly comes to the conclusion that VCAST’s service entails a communication to the public. The company is, after all, offering internet streams of protected television broadcasts (i.e. using a different technical means to that employed by the broadcaster) to an indeterminate number of customers (i.e. a public). Given the decisions discussed above, this outcome is unsurprising. Indeed, the facts of the VCAST case stand out from the other three cases discussed previously, in that VCAST was actually engaged in the transmission of protected works, whereas GS Media, Wullems and the Pirate Bay were not.[40]

Use of copied image in online school presentation – NRW / Renckhoff

The most recent interpretation of the right of communication to the public by the CJEU in a digital media context concerns the publication, on a German school website, of a presentation written by a pupil as part of a language workshop. The presentation included a photograph, taken by a Mr. Renckhoff, of the Spanish city of Cordoba, which the pupil had copied from an online travel portal. Renckhoff had licensed the unrestricted publication of his photo on the travel portal, but not the further use by the school or its pupil. Somewhat incredibly for a case that has now been litigated before three German courts as well as the CJEU, the photographer’s damages claim amounts to € 400 (about $ 460).

The German court found that the publication of the photo on the school website amounted to a ‘communication’, but was unsure whether this communication was directed ‘to the public’, in particular a ‘new public’ as required in the CJEU’s previous decisions, given that the photo had already been made available to all internet users with the permission of the author.

The CJEU found that there was a communication to the public in this case. Whereas the Svensson and subsequent BestWater[41] decisions related to, respectively, a surface link and an inline link to works freely available on a third-party website, Renckhoff concerned a user who downloaded a photo from one website and then uploaded it to another. This technical distinction proved pivotal to the CJEU’s decision: if the school pupil had embedded the photo into her presentation, it would have looked the same to the reader but presumably have been found not to constitute a new communication to the public of the photo.

The CJEU emphasises, first of all, that the right of communication to the public is preventive in nature, and allows rightholders to intervene between possible users of their work and the communication to the public which such users might contemplate making, in order to prohibit such communication. In the Court’s view, such a preventive right would be deprived of its effectiveness if the posting on one website of a work previously posted on another website with the consent of the copyright holder did not constitute a communication to a new public. This makes some sense: whereas removing a source publication disables all third-party hyperlinks that point to it, removing Renckhoff’s photo from the travel website would have left the copy of the photo on the German school’s website intact.

Secondly, the CJEU points to Article 3(3) of the Copyright Directive, which provides that the right of communication to the public referred to in Article 3(1) is not exhausted by any act of communication to the public or making available to the public within the meaning of that provision. In the court’s view, to hold that the posting on one website of a work previously communicated on another website with the consent of the copyright holder does not constitute making available to a new public would amount to applying an exhaustion rule to the right of communication.

While the outcome – that the school’s publication amounted to a communication to the public of Renckhoff’s photo – is understandable, it does leave the CJEU with the considerable challenge of squaring this with its ‘new public’ requirement. After all, the school had used the same technical means as the travel website (the internet), and the travel website had, with the author’s consent, made the work accessible to the entire internet. Rather than tying itself up in further knots, the CJEU simply states that, in the light of the case-law described above, the posting of a work on one website other than that on which the initial communication was made with the consent of the copyright holder “must be treated as making such a work available to a new public”. According to the CJEU, the public taken into account by the rightholder when he consented to original publication consisted solely of the users of that site and not of users of other websites or internet users.

The CJEU’s decision means that, when a rightholder authorises publication of his work on a particular website A, he is deemed to have taken into account that his work can be accessed by (A) all users of that website A; as well as (B) all users of all other websites that link to the work on website A, even if they use inline links to display the work within their own pages; but not by (C) the users of other websites that display local copies of the work.

The Renckhoff case serves to illustrate the complexities and confusion caused by the CJEU’s analytical approach to the right of communication to the public. In particular, the introduction of the rule that a secondary communication only qualifies as a communication to the public if it reaches a new public compared to an initial communication, and the subsequent ‘clarification’ that this requirement only applies where the secondary communication uses ‘the same technical means’ as the initial communication, has caused considerable head-scratching.[42] On a doctrinal level, some have argued that restricting the right of communication, where a secondary communication uses the same technical means as an initial communication, to situations where the secondary communication reaches a ‘new public’, violates Article 11bis(1) of the Berne Convention.[43] On a more practical level, it is difficult for a court reliably and predictably to answer the question of what public a rightholder took into account when he authorised a particular publication – let alone in preliminary reference proceedings that, as we have seen, are not conducive to fact-finding. The test therefore also introduces significant legal uncertainty for users, who will have a hard-enough time finding out who the rightholder is in relation to a work freely available on a website and whether they authorised that initial publication, without also having to determine which internet users the rightholder had in mind at the time.

Summary

Taking these decisions together, the CJEU’s current position on communication to the public in the online context can be summarised as follows:

  1. The concept of ‘communication to the public’ requires an individual assessment, taking into account several complementary criteria, which are not autonomous and are interdependent, which may, in different situations, be present to widely varying degrees, and which must therefore be applied both individually and in their interaction with one another.
  2. Hyperlinking, framing and embedding, are not a communication to the public if there is no new public, which is as a public that was not taken into account when the copyright holder authorized the initial communication. A hyperlink to a location where the work has been made available lawfully and without restrictions is not a separate communication to the public of the work.
  3. There is a communication to the public when a work is communicated using different technical means from those previously used, or, if the same technical means are used, when a work is communicated to a new public. There is a new public where the rightholder did not consent to the initial upload, if the user knew or should have known that the work was posted unlawfully or circumvented restrictions limiting access to the work.
  4. If hyperlinks are provided for financial gain, the user can be expected to have performed the necessary checks and hence there is a rebuttable presumption that the user knew that the work was originally posted unlawfully.
  5. Where a work has been posted lawfully on a freely-accessible website, a copy of that work posted on another website is considered to reach a new public that the rightholder did not take into account when he authorized the initial upload, and hence to constitute a separate communication to the public.

It is notable that GS Media, Brein / Wullems and Pirate Bay were all decided by the Second Chamber of the CJEU, while VCAST and a number of other, slightly more nuanced copyright decisions in UPC Telekabel Wien,[44] McFadden,[45] and AKM/Zürs.net[46] were handed down by the Third Chamber.[47] So far, decisions finding a communication to the public in a factual context where the alleged infringer does not engage in any actual act of transmission or retransmission seem to be limited to the Second Chamber.[48] While this does not detract from the standing of any these decisions, it does leave open the possibility that another chamber, or the Grand Chamber, will refine or modify this strand of case law in the future.

In any case, the Grand Chamber decision in Reha Training reemphasised that each question of potential communication to the public essentially has to be considered on an ad hoc basis.[49] This suggests that new fact patterns will lead to new CJEU references, even when they are quite close to the fact patterns which the CJEU has already considered. At the very least, therefore, there is will be plenty of scope for fine-tuning in the years ahead.

Legislative developments

The preliminary reference procedure is often described as a dialogue between the CJEU and national courts.[50] In practice, there is also a somewhat slower-paced dialogue between the CJEU and the EU legislator. The Court’s task in preliminary reference proceedings is to interpret EU legislation, but in doing so it also fills in the gaps that were either too obscure or too controversial for the legislator to fill. Although it rarely does so, the EU legislator can overturn disagreeable case law by adopting new legislation, as long as it is compatible with the EU treaties and Charter.

As part of its Digital Single Market strategy, the European Commission presented a proposed Directive on Copyright in the Digital Single Market in 2016.[51] It does not explicitly modify the right of communication to the public as defined in Article 3 of the Copyright Directive, but does include two proposals which significantly affect its interpretation and application.

Article 11 takes as its premise that news publishers are finding it difficult to license online uses of their press publications by various kinds of aggregators and online platforms, due to uncertainty about whether they or their authors hold the relevant copyrights. It tries to solve problem this by giving publishers their own exclusive rights of reproduction and communication to the public, separate from the copyright in the publications.

Article 13 seeks to tackle the “value gap” which the content industry has alleged to exist between the income which the large user-generated content platforms derive from works uploaded by their users, and the money passed onto rightholders. It provides that “information society service providers that store and provide to the public access to large amounts of works or other subject-matter uploaded by their users” should, in cooperation with rightholders, “take measures to ensure the functioning of agreements concluded with rightholders for the use of their works or other subject-matter or to prevent the availability on their services of works or other subject-matter identified by rightholders through the cooperation with the service providers.”

Both of these provisions raise myriad questions of policy, scope, basic meaning, implementation and unintended consequences.

After two years of debate and lobbying, the European Council of national governments and the European Parliament have each reached agreement on their own amendments to the European Commission’s proposals. The three EU institutions are currently engaged in a so-called trialogue procedure, which is intended to reconcile the different versions into one text.[52] If and when that process succeeds, the final text will be agreed and published, and Member States will have 12 months to implement the directive into their national legislation.

Although nothing is certain, the three competing versions of Articles 11 and 13 are sufficiently close that some form of agreement seems likely to come out of the trilogue. This agreement will likely give press publishers their own right of communication to of the public, and push certain categories of content sharing service providers to implement some kind of preventative copyright filtering in order to avoid liability for their users’ infringing uploads. As regards Article 11, it remains to be seen whether the new right will only cover the use of publications or extracts that would also be covered by copyright – in which case the new right will not reduce users’ freedom to operate but only add an additional class of licensors – or whether the new right might also protect against uses of small excerpts and hyperlinks, which currently fall outside the scope of copyright protection. As regards Article 13, it remains to be seen exactly which kinds of service providers will be brought within scope, and what the relationship will between communication to the public, filtering, an liability. Article 13 might provide that, if an affected provider performs a communication to the public, then it will have to license and/or filter; or that it communicates to the public if it doesn’t filter; or that it has to license and/or filter given that it communicates to the public. In a classic case of unforeseen consequences, it remains to be seen whether the eventual Article 13 will also apply to rights of publishers derived from the eventual Article 11. Social media platforms may find themselves having to run each and every hyperlink posted by their users through a copyright filter. And at a later stage, the question will arise how these copyright filters are supposed to work, and whether mandating their use is compatible with the EU Charter.

While negotiations on the directive are ongoing, a further analysis of the various competing versions and amendments will not be attempted here. Suffice to say that providers of online media services will face significant costs and legal uncertainty, while it remains to be seen to what extent the intended beneficiaries will actually gain.[53]

The new directive on Copyright in the Digital Single Market is not the only EU legislative initiative seriously to challenge the safe harbour regime established by the 2000 Electronic Commerce Directive.[54]

A modification to the EU Audiovisual Media Services Directive, to be finalised imminently, includes a requirement for “video-sharing platform providers” to take “appropriate measures” to protect minors from user-uploaded content which may impair their physical, mental or moral development; and the public at large from content that contains incitement to violence or hatred.[55]

The European Commission recently proposed a new regulation on the prevention of the dissemination of terrorist content online.[56] This proposal, which will now face detailed legislative scrutiny from the European Parliament and the Member State governments, would compel hosting service providers based in the EU or offering services to EU customers to take “appropriate, reasonable and proportionate actions” against the dissemination of terrorist content and to protect users from terrorist content. This would include removing content within one hour of receiving a removal order from a competent authority. Systematic failure to comply would be subject to a penalty of up to 4% of the hosting service provider’s global turnover of the last business year.

Taken together, these legislative initiatives pose a significant challenge to the safe harbour protections for internet intermediaries that have been in place since 2000. The proposed changes offer new protections to rightholders and consumers, but significant risks and uncertainties to providers of online media services.

Concluding remarks

Recent CJEU case law in relation to the exclusive right of communication to the public has brought about a significant increase in the scope and enforcement of copyright –  encouraged by rightholders and enforcement bodies filing domestic proceedings with the specific aim of triggering a CJEU reference. This trend can be expected to continue, and to encourage other market participants, including consumer-rights groups and intermediaries, to target cases with advantageous facts to get strategic questions referred to the CJEU. Pending EU legislative initiatives also point in the direction of broader rights, broader enforcement powers, and service providers’ increasing exposure to liability and injunction risks.

While the EU system of preliminary references is designed to interpret existing EU law, it does appears to have something of a harmonising bias. Although the statutory right of communication to the public has remained unchanged since 2001, the scope of protection has gradually broadened, and a number of recent judgments has led to the de facto harmonisation of a kind of secondary copyright liability for which the Directive did not appear to provide.

Moreover, a number of cases discussed here suggest that the CJEU’s interpretation of EU copyright law is at least partly influenced by a perception of which party ought to prevail in the underlying domestic proceedings. This dynamic is understandable, and may even be welcomed by some referring national courts. However, it does challenge the ostensible purpose of such proceedings, which is for the CJEU to interpret EU copyright legislation, at the request and service of the national court which decides the particular case. It also sits uncomfortably with the current design of the preliminary reference procedure, which is considered to be non-adversarial in nature and is not well suited to full consideration of the facts of the domestic proceedings.

Meanwhile, the inherently and deliberately ad hoc nature of CJEU decisions on the right of communication to the public has made legal certainty elusive for rightholders and users alike, and ensured that the CJEU will be answering references on this topic for  years to come. While the recent trend of harmonising and increasing copyright protection may seem likely to continue, it remains to be seen to what extent this will be balanced by the need to protect countervailing fundamental rights, in particular freedom of expression and privacy.

***

 

  1. CJEU 8 September 2018, Case C-160/15, GS Media / Sanoma (Playboy). ↑
  2. CJEU 26 April 2017, Case C-527/15, Stichting Brein / Wullems (Filmspeler). ↑
  3. CJEU 14 June 2017, Case C-610/15, Stichting Brein / Ziggo & XS4ALL (Pirate Bay). ↑
  4. CJEU 29 November 2017, Case C-265/16, VCAST / RTI. ↑
  5. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, recital 23. ↑
  6. European Commission, Proposal for a Directive of the European Parliament and the Council on copyright in the Digital Single Market, 14 September 2016, COM(2016) 593. ↑
  7. Specifically: the Treaty on European Union (TEU), and the Treaty on the Functioning of the European Union (TFEU). The CJEU’s jurisdiction in preliminary reference cases is described in Article 267 TFEU. ↑
  8. Pursuant to Article 6 TEU, the EU recognises the rights, freedoms and principles set out in the Charter of Fundamental Rights of the European Union, which have the same legal value as the treaties. ↑
  9. The CJEU does hear appeals from the EU General Court in certain cases, for example in relation to trademark applications and competition law. However, for the purposes of substantive copyright law, only the preliminary reference proceedings are relevant. ↑
  10. For a more detailed description of the preliminary reference procedure, see: M. Broberg & N. Fenger, Preliminary References to the European Court of Justice (OUP, 2nd edition, 2014). ↑
  11. Pursuant to Article 267 TFEU, lower national courts may refer questions to the CJEU, and highest courts must refer questions to CJEU, if an issue of EU law rises in domestic proceedings, the answer to which is not immediately clear (acte clair) or has been previously clarified by the CJEU (acte éclairé). ↑
  12. In practice, the CJEU can and does interpret the questions posed by the national courts, often to the point of rephrasing them entirely. ↑
  13. The CJEU can declare a reference inadmissible on the grounds that the questions posed are obviously irrelevant to determining the outcome of the proceedings before the national court; or relate to a purely hypothetical dispute; or where the national court does not provide sufficient legal and factual information to usefully answer the questions posed. ↑
  14. See the CJEU’s 2017 Annual Report, available at: https://curia.europa.eu/jcms/jcms/Jo2_7000/. ↑
  15. On the CJEU’s pre-2016 copyright case law, see: Favale , Kretschmer & Torremans, ‘ Is There a EU Copyright Jurisprudence? An Empirical Analysis of the Workings of the European Court of Justice’, Modern Law Review 79(1): 31-75 (January 2016),: https://ssrn.com/abstract=2643699. ↑
  16. See Article 16 of the Statute of the Court of Justice, and article 27 of the Rules of Procedure, both available online at: https://curia.europa.eu/jcms/jcms/Jo2_8022/procedure. ↑
  17. CJEU, Practice directions to parties concerning cases brought before the Court, § 10. ↑
  18. CJEU, Practice directions to parties concerning cases brought before the Court, § 33. ↑
  19. CJEU, Practice directions to parties concerning cases brought before the Court, § 11. ↑
  20. CJEU, Practice directions to parties concerning cases brought before the Court, § 52. ↑
  21. Rules of Procedure of the Court of Justice, Chapter 8. ↑
  22. Directive 2001/29/EC, recital 4. ↑
  23. Directive 2001/29/EC , recitals 3 and 31. ↑
  24. CJEU 29 January 2008, Case C‑275/06, Promusicae, par. 68. ↑
  25. CJEU 24 November 2011, Case C-70/10, Scarlet Extended, par. 43-45. ↑
  26. CJEU 8 September 2018, Case C-160/15, GS Media / Sanoma, discussed in more detail below. ↑
  27. CJEU 3 September 2014, Case C-201/13, Deckmyn / Vandersteen. ↑
  28. CJEU 24 November 2011, Case C-70/10, Scarlet Extended / SABAM; CJEU 27 March 2014, Case C-314/12, UPC Telekabel Wien / Constantin Film Verleih. ↑
  29. CJEU pending case C-310/17, Levola Hengelo. For more information, see the Opinion of the European Copyright Society on the case, available online at: https://europeancopyrightsocietydotorg.files.wordpress.com/2018/03/ecs-opinion-on-protection-for-tastes-final1.pdf ↑
  30. Article 3(1) of Directive 2001/29/EU simply states that “Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.” Recital 23 explains: “This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts.” ↑
  31. See e.g. CJEU 31 May 2016, Case C-117/15, Reha Training, fourth question quoted at par. 19. ↑
  32. Full disclosure: the author represented GS Media in this case, so the account follows is at least to some extent subjective. ↑
  33. CJEU 13 February 2014, Case C-466/12, Svensson / Retriever. ↑
  34. Case C-160/15, AG opinion of 7 April 2016, available online at: http://curia.europa.eu/juris/document/document.jsf;?text=&docid=175626&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=158770. ↑
  35. Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984). ↑
  36. MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). ↑
  37. CJEU 7 December 2006, Case C-306/05, SGAE/ Rafael Hoteles, which was followed by a series of further references about the provision of TVs and radios in spas, sanatoria, hotels and dentists’ surgeries, culminating in the Grand Chamber judgment of 31 May 2016 in Case C-117/15, Reha Training. ↑
  38. The CJEU also held that the consumer using the hardware box to watch pirated streams is thereby making an unlawful reproduction of the relevant work, but this issue is outside our present scope. ↑
  39. Pursuant to Article 8(3) of Directive 2001/29/EC, Member States must ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right. At issue was whether the providers of the Pirate Bay were using the services of the access providers to infringe copyright; the appellate court had held that the Pirate Bay was not itself communicating works to the public but only referencing infringing content that was being provided by individual uploaders. ↑
  40. The domestic court in the Pirate Bay case had considered whether the Pirate Bay might be engaging in the communication to the public of art work relating to audiovisual productions (e.g. DVD/CD covers), but this was not the question at issue in the CJEU proceedings. ↑
  41. CJEU 21 October 2014, Case C-348/13, BestWater / Mebes & Potsch. ↑
  42. To make things more complicated, it seems that the ‘new public’ can also sometimes apply where the second communication uses different technical means to the original communication: in AKM/Zürs.net (CJEU 16 March 2017, Case C-138/16), the CJEU held that a cable provider performing a simultaneous retransmission of a terrestrial Austrian public TV broadcast did not require separate authorisation from rightholders, because the rightholders had already taken into account the entire Austrian population when authorising the initial terrestrial broadcast. ↑
  43. For discussion and references, see: P.B. Hugenholtz & S. van Velze, ‘Communication to a New Public? Three Reasons Why EU Copyright Law Can Do Without a ‘New Public’; (July 19, 2016), available at SSRN: https://ssrn.com/abstract=2811777. At least in the context of hyperlinking, the obvious counterargument is that there is also no statutory justification in considering a hyperlink to a work to be a ‘communication’ of that work in the first place, hence only qualifying a hyperlink as a communication to the public if it reaches a new public is still affording more protection than the Berne Convention requires. ↑
  44. CJEU 27 March 2014, Case C-314/12, UPC Telekabel Wien / Constantin Film Verleih (setting out conditions under which a website blocking on the basis of Article 8(3) of the Copyright Directive may be compatible with the rights of internet access providers and users). ↑
  45. CJEU 15 September 2016, Case C-484/14, McFadden / Sony Music (holding that a retailer is not liable for copyright infringement committed by a customer using the store’s free open wifi network, but may be required to employ password protection and identify users). ↑
  46. CJEU 16 March 2017, Case C-138/16, AKM / Zürs.net (holding that a cable provider performing a simultaneous retransmission of a satellite TV broadcast does not require separate authorisation from rightholders). ↑
  47. Strictly speaking, AKM/Zürs.net was decided by the Eighth Chamber, which is a three-judge chamber. However, its members were also part of the five-judge Third Chamber that decided the VCAST case. ↑
  48. However, it was another chamber, three of whose judges now sit in the Third Chamber, which first held, in Svensson, that the provision of a hyperlink to a work constitutes a communication of that work, albeit in a factual context that ultimately led the court to conclude that there was no communication to the public. ↑
  49. CJEU 31 May 2016, Case C-117/15, Reha Training, par. 35. ↑
  50. See e.g. the European Parliament’s 2017 briefing document on the preliminary reference procedure, http://www.europarl.europa.eu/RegData/etudes/BRIE/2017/608628/EPRS_BRI(2017)608628_EN.pdf; the declaration of the Court on the occasion of the Judges’ Forum organised to celebrate the 60th anniversary of the signing of the Treaties of Rome, https://curia.europa.eu/jcms/jcms/p1_315711/en/; and the CJEU’s 2017 Annual Report p. 5. ↑
  51. Proposal for a Directive of the European Parliament and the Council on copyright in the Digital Single Market, 14 September 2016, COM(2016) 593. ↑
  52. For a comparison between the various positions, and the underlying documents, see: https://www.create.ac.uk/policy-responses/eu-copyright-reform/. ↑
  53. See Remy Chavannes, ‘A neighbouring right for press publishers – the wrong solution to a serious problem’, Kluwer Copyright Blog 13 June 2016, available online at: http://copyrightblog.kluweriplaw.com/2016/06/13/neighbouring-right-press-publishers-wrong-solution-serious-problem/. ↑
  54. Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market. ↑
  55. European Parliament legislative resolution of 2 October 2018 on the proposal for a directive of the European Parliament and of the Council amending Directive 2010/13/EU on the coordination of certain provisions laid down by law, regulation or administrative action in Member States concerning the provision of audiovisual media services in view of changing market realities (COM(2016)0287 – C8-0193/2016 – 2016/0151(COD)). See also: https://ec.europa.eu/digital-single-market/en/revision-audiovisual-media-services-directive-avmsd. ↑
  56. Proposal for a regulation of the European Parliament and the Council on preventing the dissemination of terrorist content online, 2018 COM(2018) 2018/640 final, see: https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=COM:2018:0640:FIN. ↑

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