According to a recent ruling by the Court of Justice of the European Union ("CJEU"), the reproduction onto another website of a copyright work, which had been made freely available with the copyright owner's permission, is not equivalent to hyperlinking to the work and is likely to lead to a finding that there is a 'new public' to whom the communication has been made.

Facts

In a case referred from the Federal Court of Justice in Germany , a school pupil had downloaded from an online travel portal a photograph taken by Mr Renckhoff, to use as part of a school presentation. The photograph had been posted by Mr Renckhoff on the portal without any restrictive measures preventing it from being accessed or downloaded. The pupil's presentation was later posted by the school onto another website.

Mr Renckhoff claimed that the licence that he had granted was exclusively to the operators of the portal (the travel company), and that the posting of the photograph on the school website infringed his copyright.

The German Federal Court of Justice made a reference to the CJEU, asking it to clarify whether the re-posting of a photograph, which had been previously published without restriction and with the copyright owner's consent, using the same medium (i.e. on a website) fell within the meaning of a 'communication to the public' in the context of Article 3(1) of Directive 2001/29 (the "Directive").

Analysis

Established case law confirms that 'communication to the public' requires:

  • an 'act of communication' of a work, or otherwise 'making [the work] available', whether or not any person avails themselves of the opportunity to access the work; and
  • communication of that work to a 'public', being an "indeterminate number of potential receipients", implying a fairly large number of persons.

The CJEU confirmed that the act of posting the photograph on the school's website (1) gave its visitors the opportunity to access the photograph there, constituting an 'act of communication' and (2) all potential users of the school's website would be an indeterminate and fairly large number of receipients, and therefore would be a communication to a 'public'.

Although these conditions were fulfiled, the CJEU reiterated that, in order to be treated as a "communication to the public", the copyright work must also be communicated, either:

  • using specific technical means different from those previously used, or
  • to a 'new public', not already taken into account by the copyright owner when authorising the initial communication of his work.

As it was common ground that both the initial and subsequent communications were made using the same technical means (both available on freely accessible websites), the CJEU considered the second possibility.

Decision

The CJEU held that "the posting of a work protected by copyright 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".

1. The CJEU regarded that the copyright owner's 'preventative' right – to intervene to prevent and prohibit unauthorised communications of the copyright work to the public – would be much more difficult, if not impossible, to exercise if it were held that 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. Such a finding could lead to instances where, even if the copyright owner decides to remove the work from the website which initially communicated it, the work would remain available on the website on which it had been newly posted, without recourse for the copyright owner.

The CJEU was keen to preserve the copyright owner's ability to control, and if necessary end, the exercise of rights by third parties in his copyright works, given that (subject to certain exceptions) all acts of reproduction or communication to the public of a work by a third party requires the prior consent of its author.

2. Article 3(3) of the Directive specifically provides that the right of communication is not exhausted by any act of communication to the public or making available to the public within the meaning of that provision. Interpreting this provision to the contrary would act to exhaust the owner's copyright where he had made a communication to the public of the work. The CJEU considered this would be contrary to the specific wording of the Directive.

3. The CJEU considered that interpreting Article 3(1) of the Directive to the contrary would deprive the copyright owner of opportunities to claim a royalty or "reward" for the use of his work, despite this purpose – the ability to commercially exploit the marketing or making available of copyright materials – being expressly set out in the recitals to the Directive.

On the facts, the CJEU held that Mr Renckhoff had only accounted for visitors to the original website – and not for those engaged with the second website – having access to his copyright work when making the original communication. Therefore, the reproduction of his photograph on the school's website without his consent was a communication to a 'new public'.

Re-posting versus hyperlinking

The CJEU drew a distinction between instances where a clickable link refers to another website on which the original publication is made (hyperlinking) and instances where a copyright work has been re-posted. The CJEU considered that:

  • hyperlinks contribute to the "sound operation of the internet by enabling dissemination of information", where re-posting content on a separate website does not achieve or contribute to that objective in the same way;
  • should the copyright owner elect to cease communication of his work and remove it from the orginal website, a hyperlink leading to it would be rendered obsolete and achieve the copyright owner's aims (of removing the work from communication), whereas re-posting the content on another website would mean that the work remains available despite action by the copyright owner to withdraw his consent and remove the work;
  • unlike previous case law involving hyperlinking , where there had been no involvement by the administrator of the website on which the hyperlink had been posted, in this case (specifically) the work had been reproduced on a private server and then posted on a separate website, meaning that the user played a decisive role in the communication to a public which was not taken into account by the copyright owner when he consented to the original communication.

Commentary

The distinction drawn by the CJEU between re-posting and hyperlinking may be difficult to comprehend, particularly where third parties wish to make use of copyright works. Indeed, some may argue that, even where copyright owners are keen to exploit and promote their works, it would be practical (and not overly burdensome) for them to employ relatively straightforward methods to protect themselves against unauthorised use, including:

  • uploading works to password protected websites, so that the audience for their works is limited by subscription;
  • exploiting their works through sites which monetise the artworks, for the copyright owner would receive a fee for any third party usage;
  • protecting the electronic file, meaning that it cannot be downloaded without a watermark or other stamp identifying the owner;
  • only uploading to websites with strict rules and terms on access, download, storage and re-use, which would provide a basis for a breach of contract claim.

However, the CJEU's judgment embodies the clear policy reasons which underpin the drafting of the Directive, which support the argument that copyright owners should not be expected to employ technogical measures and submit to additional formalities in order to enforce and protect their rights.

It seems that of particular concern to the CJEU, and one of the key reasons for drawing a distinction between hyperlinking and re-posting, is the loss of control which copyright owners experience where works are independently reproduced, and therefore cannot be removed by the owner acting alone when he decides to withdraw his consent.

Still, the significance which the CJEU attaches to the "decisive role in the communication" is noteworthy. Presumably this stems from an assumption that taking more steps to reproduce the copyright work – i.e. downloading and re-posting it – suggests an intention to display permanently the work elsewhere, rather than rely upon the original website to keep the work available. Yet, it would be interesting to see whether this rationale and distinction would hold if a third party website administrator were to methodically catalogue freely available copyright works (perhaps displaying hyperlinks connected to a number of websites) and therefore plays a more decisive role in the communication.

The case law in this area is likely to develop further. Shortly before the CJEU's judgment, a court in Berlin held that "framing" of copyright images would not constitute a 'communication to the public', but the judges were unable to consider the implications of the case discussed here because the CJEU judgment had not been published at the time the Berlin court gave its judgment. Commentators suggest that the decision by the Berlin court might now be incompatible with the CJEU's judgment – as the case before the Berlin courts involved an independent copy being created and stored on independent servers – so we doubt that this will be the last word on the subjects of re-posting, framing and hyperlinking to copyright materials.